Reduced Scope Of Post-IPR Estoppel Imperils Litigation Stays

In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel under 35 U.S.C. § 315(e) to only those claims and grounds subject to a final written decision from the PTAB. However, the Court acknowledged the frustrations of the Patent Owner regarding the diminished "simplification of issues" achieved by the IPRs given the limited estoppel effect, and signaled that such outcomes may weigh against future stays pending an IPR.

Background

In January of 2013, Depomed filed suit in the District of New Jersey accusing Purdue's OxyContin® product of infringing two patents directed to formulations for drugs that benefit from a prolonged time of controlled release in the stomach and upper gastrointestinal (GI) tract. (Two other patents were involved in the suit, but were subsequently dropped.) In January of